Appeal No. 96-2862
Application No. 08/030,704
Claim 22 is rejected under 35 U.S.C. § 102(b) as being
anticipated by Niemi. Niemi discloses a holder 10 mountable to
the front surface of a panel of standard perfboard or pegboard 11
having spaced holes therein comprising first and second portions
32A, 32 fitting into two adjacent holes, both of the first and
second portions comprising means 38 in conjunction with portions
of fingers 32 for applying positive pressure against the rear
surface around the hole into which it is inserted. As to the
limitation in the preamble that the holder is a “tool holder,”
the particular manner in which a device or article is used cannot
be relied on to distinguish structure from the prior art. See,
e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431-32 (Fed. Cir. 1997), In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1657 (Fed. Cir. 1990), In re Yanush, 477 F.2d
958, 959, 177 USPQ 705, 706 (CCPA 1973) and In re Casey, 370 F.2d
576, 580, 152 USPQ 235, 238 (CCPA 1967). Here, the holder of
Niemi clearly has the capability of holding a tool and whether a
tool actually is or might be placed in Niemi’s holder depends
upon the performance or non-performance of a future act of use,
rather than upon a structural distinction in the claims. Stated
differently, the holder of Niemi would not undergo a
metamorphosis to a new holder simply because a tool was placed in
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